[At-Large] Privacy and domain abuse vs the IP constituency

[Eric Brunner-Williams]

In the context of the Post Delegation Dispute Resolution Process 
(PDDRP), the World Intellectual Property Organization (WIPO) made a 
comment (attached) which, while registry operator specific, has a 
bearing upon the issue.

The WIPO proposal, if adopted, would hold a registry operator 
accountable for trademark infringement that occurs within a TLD if it 
"knowingly permitted, or could not have reasonably been unaware of" 
infringing domain names within the TLD.

This is sometimes referred to as "Willful Blindness" and is used by 
trademark owners to hold third parties liable for contributory 
trademark infringement.

Support for this proposal came from the International Trademark 
Association, the Intellectual Property Constituency of ICANN, the 
International Olympic Committee and other trademark owners and 
associations.

Quoting from Jeff Neuman's note to the Temporary Drafting Group Legal 
(tdg-legal) mailing list of May 5th, 2010:

"In the United States, with respect to whether or not domain name 
registries and registrars can be liable for contributory trademark 
infringement is well settled. The 1999 case of Lockheed Martin v. 
Network Solutions [1] controls. In that case, the United States Court 
of Appeals for the Ninth Circuit found that Network Solutions was not 
liable to Lockheed Martin for contributory infringement as a matter of 
law because it was acting merely as a domain name registrar in 
registering domain names. More specifically, it found that in order 
for a service provider to be liable under the doctrine of contributory 
infringement, the service provider must exercise sufficient control 
over the infringing conduct itself. See also Tiffany v. Ebay [2] 
decided on April 1, 2010. If a trademark owner cannot establish that a 
service provider has sufficient control over the infringing conduct, 
then whether or not the service provider knew, should have known or 
turned a blind eye towards the infringing conduct, is irrelevant."

I suggest that asking the set of registrars which currently control 
the Registrar Stakeholder Group's (RrSG) process if they would like a 
registrar to held accountable for trademark infringement that occurs 
within the TLDs it provides registrations if it "knowingly permitted, 
or could not have reasonably been unaware of" infringing domain names 
for which it is the registrar of record would have a similar outcome 
to that provided by the set of registries which currently control the 
RySG process.

A defect in the argument offered by NeuStar to the WIPO proposal that 
wilfull blindness should be the sole basis for direct or contributory 
infringement was shown by the authors of the .C variant of the 
Conficker distributed system. The .C variant attempted to create 
rendezvous points (domain names) in more than one namespace. The 
proper scope of the issue is not the isolated affirmative acts of any 
contracted party, but what contracted parties can reasonably know.

The NeuStar defense, if applied to the .C fact pattern, would hold a 
registry operator or registrar immune from any claim arising from the 
registry operator's or registrar's failure to block the portion of the 
algorithmically predicted rendezvous point buys over which the 
registry operator or registrar has control by the .C attack engine for 
command and control purposes of a botnet consisting of hundreds of 
thousands of covertly repurposed computors, if the immediate conduct 
of the .C system was trademark infringement, aka "cybersquatting".

What registry operators can reasonably know, having access to their 
own, and any and all other gTLD zone files through the zone file bulk 
access right, is patterns of registration utilizing one or more 
registrars, and one or more namespaces. I believe that that is the 
expectation of Derek Smythe.

The issue of contracted party conduct and liability, under national 
law or private contract, is not new, and my participation in an ALAC 
regional organization is a few weeks short of six months, so I have 
little idea of prior deliberation on the issue by ALAC or its regional 
organizations. However, the interest of the contracted parties, or 
rather, those amongst the contracted parties which manage to be 
influential on issues which potentially affect their pecuniary 
interests should not be limiting, nor should any particular national 
law, on the deliberation of what is in the public interest, by the ALAC.

I think a useful and interesting "step" to take, one not in the 
direction of "WHOIS", is determining what pattern(s) of conduct, by a 
contracted party, rises to the level of "wilfull blindness", where 
ever there is a public interest. This necessarily includes the area of 
trademark infringement. This would form a basis for advice the ALAC 
may provide.

Eric

[1] 
http://scholar.google.com/scholar_case?case=15162974496362566611&q=194+F.3d+980&hl=en&as_sdt=2002

[2] 
http://www.ca2.uscourts.gov/decisions/isysquery/65a5a693-7086-4d06-a0d2-13e6c9981866/2/doc/08-3947-cv_opn.pdf
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